PRACTICE AREAS

Litigation and Other Forms of Dispute Resolution Intellectual Property Litigation and Trials

Litigation related to intellectual property rights (including infringement lawsuits, invalidation trials, the appeals process, import suspensions and temporary injunctive relief) is what TMI best specializes in and is a field in which TMI has an excellent track record in.

1. Litigation Related to Patent Rights

In patent infringement lawsuits and invalidation trials, it is vital to fully understand the technical content of the patented invention in order to construct legal arguments, and our firm has been successful in achieving this due to the collaboration of our specialized litigation attorneys and specialized technical patent attorneys.  In Japan, it is not uncommon for patent infringement lawsuits and invalidation trials to be handled separately by different law firms and patent offices, but in such system in which two sets of proceedings are handled by separate firms, there is a risk that inconsistencies and discrepancies may arise in the contents of legal arguments.  At TMI, we avoid such risk by having attorneys and patent attorneys from the same firm collaborate to handle both sets of proceedings as one team.  In addition, we are able to strategically litigate by seeking the opportunity to amend patent claims while considering the effect on patent infringement lawsuits.

Moreover, we have more than 50 patent attorneys specialized in fields such as machinery, electricity, semiconductors, chemistry, materials, biotechnology, medicines, communication, IT, software, computer science, energy, environmental technology and so on, covering almost every technical field, making it possible for us to respond to patent disputes in any technical field.  Also, we have a proven track record in handling numerous patent infringement lawsuits and invalidation trials in a wide variety of technical fields, including prominent cases, representing both the side of the plaintiff and the side of the defendant, for domestic and international clients.

2. Litigation Related to Trademark and Design Rights

As for litigation related to trademark and design rights, TMI has been victorious in many history-making court decisions, including Supreme Court decisions, and has earned many accolades.  Also in oppositions to registration, invalidation trials and cancellation trials, we have handled several hundreds of cases, and through their decisions, we have had a significant impact on the practices of the Japan Patent Office. 

Also, since both infringement lawsuits and invalidation trials are handled with cooperation by attorneys and patent attorneys from the same firm, the risk of inconsistencies and discrepancies in the contents of claims can be avoided.  Further, such cooperation enables consistent and strategic litigation during proceedings at the Japan Patent Office, which have an effect on the parallel infringement lawsuit.  We thoroughly litigate in accordance with domestic and international clients’ needs, coming up with comprehensive strategies for infringement lawsuits, invalidation trials and other proceedings, based on careful review of applicable precedents and based on collaboration of specialized intellectual property attorneys and specialized trademark and design patent attorneys as one team in invalidation trials. 

3. Litigation Related to Copyrights

In litigation related to copyrights, recently, novel legal problems often have become an issue, and it is vital to be well-versed in copyright law and the related laws and regulations.  In addition to possessing legal knowledge, to successfully carry out litigation, it is also important to be well-versed in industry practices and the like.

In this regard, at TMI, attorneys well-versed in copyright law and the related laws and regulations as well as industry practices and with abundant knowledge and experience in the domestic and international media and entertainment business, carry out litigation, foreseeing the litigation strategy most beneficial to the client.  At present, we have a proven track record in handling many cases, representing domestic and international clients in a wide range of fields such as film, music, publications, computer programs, and other fields, including many prominent cases.

4. Special Counsel and Advisor Attorneys Supporting Intellectual Property Related Litigation

At TMI, former Supreme Court Justices and leading jurists in the field of intellectual property rights work as special counsel and advisor attorneys.  In any given field, we can provide advice incorporating the thinking of judges and the latest academic issues, from the planning of intellectual property-related litigation strategy to providing reasoning and proof on specific issues.

Attorneys in this Practice Area

Patent Attorneys in this Practice Area

Related Articles and Publications

2013/01/28BOOK “Legal Advice on Software Business”
2011/04/13BOOK “A New Annotated Guide to the Patent Act” (Volumes One and Two)
2010/05/21BOOK “A Professional Dictionary of Intellectual Property Terms (Chiteki-zaisan Purofesshionaru Yogo Jiten)”

Related Seminars and Lectures

2017/12/15MONTHLY TMI Associates’ 113rd monthly seminar: “Trademark, Design and Unfair Competition Lawsuit Judgments in 2017 Which Professionals Should Note – with Comments from Attorney Shuhei Shiotsuki, a Former Chief Judge of the Intellectual Property High Court”
2017/09/25Hosted / Co-hosted TMI Associates’ special joint seminar with Morgan, Lewis & Bockius LLP: “Introduction of the Latest Important Judicial Intellectual Property Decisions in Japan”
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